Tosca TravelGoods (Aust) Pty Ltd v Samsonite IP Holdings S.a.r.l [2015] ATMO 39 (8 May 2015)

Samsonite applied to register its trade mark COSMOLITE for luggage and was opposed by Tosca based on its prior registrations for COSMO and COSMOPOLITAN covering the same goods.

Two grounds were pressed by the opponent; that its prior registrations were substantially identical with or deceptively similar to the applied for mark (section 44), and that the applicant was not the owner of the applied for mark (section 58).

The Hearing Officer noted that ‘LITE’ was commonly registered and used in respect of luggage to indicate the weight of the goods and, as a result, there was no real material distinction between the trade marks COSMO LITE and COSMOLITE. Additionally, the applicant’s advertising emphasised the light weight nature of its goods, which reinforced the descriptiveness of the ‘LITE’ element of its trade mark.

Accordingly, the Hearing Officer found that the trade marks COSMO and COSMOLITE were substantially identical.

However, the applicant led evidence of its use of the trade mark (as noted above) since 2009. This use was significant enough for the provisions of honest concurrent use to be applied.

The Hearing Officer then turned to section 58 and, given his earlier finding that the trade marks at issue were substantially identical and cover the same goods, the opponent was, for the purposes of section 58, the owner of the applicant’s trade mark in Australia. As there are no honest current use exceptions to section 58, the application was refused registration.